Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA920047
`09/05/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067124
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Biogrand Co., Ltd.
`
`THOMAS H RYOU
`RYOU LAW
`1717 PENNSYLVANIA AVE NW, STE 1025
`WASHINGTON, DC 20006
`UNITED STATES
`THRyou@ryoulaw.com
`904-796-8866
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Thomas Ryou
`
`thryou@ryoulaw.com
`
`/thomasryou/
`
`09/05/2018
`
`Petitioner BIOGRAND Resp and Cross Motion SJ part 1 of 5 pgs
`1-39.pdf(1668058 bytes )
`Petitioner BIOGRAND Resp and Cross Motion SJ part 2 of 5 pgs
`40-65.pdf(1997593 bytes )
`Petitioner BIOGRAND Resp and Cross Motion SJ part 3 of 5 pgs
`66-83.pdf(665537 bytes )
`Petitioner BIOGRAND Resp and Cross Motion SJ part 4 of 5 pgs
`84-110.pdf(5900922 bytes )
`Petitioner BIOGRAND Resp and Cross Motion SJ part 5 of 5 pgs
`111-130.pdf(987561 bytes )
`Declaration of KIM SUNG SU part 1 of 8 pgs 1-41.pdf(2621655 bytes )
`Declaration of KIM SUNG SU part 2 of 8 pgs 42-83.pdf(5935130 bytes )
`Declaration of KIM SUNG SU part 3 of 8 pgs 84-96.pdf(1515589 bytes )
`Declaration of KIM SUNG SU part 4 of 8 pgs 97-130.pdf(6025522 bytes )
`Declaration of KIM SUNG SU part 5 of 8 pgs 131-165.pdf(3874977 bytes )
`Declaration of KIM SUNG SU part 6 of 8 pgs 166 -182.pdf(1745497 bytes )
`Declaration of KIM SUNG SU part 7 of 8 pgs 183 - 221.pdf(5350580 bytes )
`Declaration of KIM SUNG SU part 8 of 8 pgs 222 - 229.pdf(1616387 bytes )
`2018-08-31 Declaration by Amanda Vickers USBSL.pdf(86221 bytes )
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 1 of 130
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`BIOGRAND CO., LTD,
`
` Petitioner
`
` v.
`
`
`SUNBIO CORPORATION,
`
` Respondent
`
`
`
`
`In the Matter of Registration No: 4,932,313
`
`For the mark: BF-7
`
`Registered on April 5, 2016
`
`Cancellation No. 92067124
`
`
`
`
`
`
`
`
`
`PETITIONER’S COMBINED RESPONSE IN OPPOSITION TO
`RESPONDENT’S MOTION FOR PARTIAL SUMMARY JUDGMENT
`AND PETITIONER’S CROSS-MOTION FOR SUMMARY JUDGMENT
`AND MEMORANDUM IN SUPPORT THEREOF
`
`I. INTRODUCTION
`
`Petitioner submits this response in opposition to Respondent’s Motion for Partial
`
`
`
`
`
`
`
`
`
`
`
`Summary Judgment regarding Petitioner’s claims of false advertising, misrepresentation as to the
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`source of goods, likelihood of confusion, and abandonment.
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`Further, Petitioner respectfully moves the Board, pursuant to FRCP 56 and TBMP § 528,
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`for summary judgment in Petitioner’s favor based upon the statement of facts and memorandum
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`of law and supporting evidence set forth below.
`
`II. FACTUAL BACKGROUND
`
`
`
`Petitioner Biogrand is the sole source of genuine BF-7 branded silk fibroin peptide
`
`clinically tested and approved by the KFDA and the US FDA. Since June 2001, Petitioner
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`has been conducting research and development regarding the use of silk fibroin peptide as a
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`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 2 of 130
`
`functional dietary supplement to benefit human brain health.1 From 2004, Petitioner coined the
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`marks BRAINFACTOR-7 and BF-7 to market these functional health products.2 From 2004,
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`Petitioner secured various approvals from the Korean Ministry of Food & Drug Safety
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`(“KFDA”) for the exclusive right to manufacture, market, and sell BF-7 branded products.3
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`Petitioner has spent millions of dollars for the research, development, and promotion of its BF-7
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`branded products.4 Under Korean law, the product name, manufacturer, and claimed health
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`benefit must be registered and approved by the KFDA. Accordingly, when any reference is
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`made to “BF-7” for silk fibroin from Korea, that reference legally points to Petitioner Biogrand.5
`
`
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`Petitioner’s BF-7 Studies. Clinical trials regarding Petitioner’s BF-7 products resulted
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`in twelve scientific articles published from 2004 to 2011 reporting the potential health benefits of
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`Petitioner’s BF-7 products (“Petitioner’s BF-7 Studies”).6 Unauthorized use of Petitioner’s BF-7
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`Studies to market and sell products that are not Petitioner’s BF-7 products is illegal in Korea, and
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`outside of Korea such use is per se misleading, deceptive, and often fraudulent.
`
`BrainOn is Respondent’s Supplier. Shortly after the KFDA approved Petitioner’s BF-
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`7 products as “functional health” products permitted to be marketed as conferring benefits to
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`brain health, a former employee of Petitioner, Mr. KANG Yong Koo established a company in
`
`
`1 Declaration of Dr. Sung Su Kim ¶ 4
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` 2
`
` Declaration of Dr. Sung Su Kim ¶ 5, Exh. 1; See also, P000001
`
` 3
`
` On April 29, 2009, Petitioner secured approval from the Korean Ministry of Food and Drug Safety for BF-7 as a
`“functional health food” per the Health Functional Food Act of the Republic of Korea. See Decl. of Dr. Sung Su Kim
`¶ 9, Exh. 4; See also, P000003 and P000004.
`
` 4
`
` Declaration of Dr. Sung Su Kim ¶ 6
`
` 5
`
` Exhibit A – clarification of Korean law re BF-7 exclusive rights; See also, P000098 - P000106
`
` 6
`
` Declaration of Dr. Sung Su Kim ¶ 7, Exh. 2
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 3 of 130
`
`Korea known as BrainOn, Co., Ltd., (“BrainOn”) to sell products claiming to be “silk fibroin
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`hydrolysate” using the brand “BF-400.”7
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`Respondent Sunbio’s Knowledge of Petitioner’s BF-7 and Petitioner’s BF-7 Studies.
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`Thomas Chang who is the current CEO of Respondent Sunbio, was previously the owner
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`of a company in Korean known as SmartNutri.8 Thomas Chang promoted products made with
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`BrainOn’s BF-4009 – however, those marketing efforts were made using Petitioner’s BF-7
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`Studies, and thus, were false and misleading.
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`A product called “SmartMemory” was registered with the KFDA on April 16, 2015,
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`which Thomas Chang promoted using Petitioner’s BF-7 Studies10 – however, no product called
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`“SmartMemory BF-7” has ever been approved by the KFDA for manufacturing, marketing, or
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`sale.11
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`The official confirmations from the Korean government are determinative in proving that
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`Respondent had knowledge of Petitioner’s prior use and rights in the BF-7 mark; as well as
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`proving Respondent’s non-use, and fraudulent fabrication of the specimen Respondent submitted
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`to the USPTO – a specimen bearing a counterfeit KFDA certification seal.
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`Unlawful Acts in Violation of Korean Law. During the course of various lawsuits in
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`Korea, beginning in 2008, KANG Yong Koo and BrainOn have been found guilty of violating
`
`
`7 Declaration of Dr. Sung Su Kim ¶¶ 16-19, Exhs. 10-13
`
` 8
`
` Exhibit I – Respondent’s Answer to Petitioner’s Interrogatory No. 15: “SmartNutri ceased to do business in
`December, 2016. SmartNutri was owned by Thomas Chang, but does not have any affiliation with Registrant.”
`
` 9
`
` Exhibit B - KFDA Review and Response re Manufacturing Report Inquiry dated April 15, 2018; See also P000142 -
`P000142 (According to the KFDA, Smart Memory was made with BrainOn’s Ingredient No. 2014-24).
`
`10 Declaration of Dr. Sung Su Kim ¶ 20, Exh. 14.
`
`11 Exhibit B - KFDA Review and Response re Manufacturing Report Inquiry dated April 15, 2018, ¶3A; See also
`P000142 - P000142
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 4 of 130
`
`various laws involving dishonesty such as false advertising, falsifying clinical studies, violating
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`KFDA regulations – resulting in a ban of all BrainOn silk fibroin hydrolysate products claiming
`
`to have health benefits. It is important to note that KANG Yong Koo and Thomas Chang
`
`marketed and sold BrainOn’s “BF-400” using Petitioner’s BF-7 Studies – but they never sold
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`products actually branded as “BF-7” because under Korean law, they could not. By June 22,
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`2015, the KFDA was notified by the Korean National Police who were already conducting an
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`investigation into BrainOn’s false/deceptive advertisements regarding BrainOn’s “functional”
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`raw materials.12 The KFDA cites June 22, 2015 as the date the Police requested cooperation in
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`an ongoing investigation regarding BrainOn’s false advertisements, and KFDA officials testified
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`in that investigation on July 7, 2015.13
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`On August 28, 2015 Respondent Sunbio filed the Application for registration of BF-7
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`with the USPTO. By June 23, 2016 the KFDA prohibited the manufacturing, distributing, or
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`selling of BrainOn and SmartNutri products relating to functional raw materials. No longer able
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`to promote their products using Petitioner’s BF-7 Studies in Korea, KANG Yong Koo and
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`Thomas Chang shifted their focus to the United States, and established a sophisticated
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`importation and distribution structure where BrainOn’s untested and non-functional “food”
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`additive could be recast and sold in the United States as if it were the scientifically-backed,
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`clinically tested, KFDA approved, true BF-7.
`
`
`
`
`
`
`
`
`12 Exhibit C – Parliamentary Inquiry to KFDA from Korean National Assembly Member NAM In Soon; See also,
`Declaration of Dr. Sung Su Kim, Exh. 15
`
`13 Exhibit C - Parliamentary Inquiry to KFDA by NAM, Question 2
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 5 of 130
`
`BrainOn+Sunbio+Novel: A Cartel Structured to Evade Korean and U.S. Law.
`
`On August 28, 2015, Respondent Sunbio filed a U.S. trademark application for “BF-7”.
`
`On September 17, 2015, Novel Ingredient Services, LLC filed a U.S. trademark
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`application for “CERA-Q”.
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`On October 22, 2015, BrainOn filed a Korean trademark application for “CERA-Q”.14
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`From Respondent’s discovery responses, the deceptive process is clear: (1) BrainOn
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`exports from Korea “non-functional” food ingredient material as “CERA-Q” or “silk fibroin,”
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`thus claiming no direct violation of Petitioner’s rights and no violations of Korean law;15 (2)
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`Sunbio imports BrainOn material and renames it “CERA-Q” or “BF-7” but this renaming can
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`only be seen on invoices to Novel Ingredient, thus claiming no direct violation of Petitioner’s
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`rights on the part of Sunbio alone; (3) Novel Ingredient then re-rebrands the material as “CERA-
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`Q” again but this time under U.S. trademark law, using marketing material with only the name
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`“CERA-Q” makes it difficult to claim direct violations on the part of Novel Ingredient alone; (4)
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`Novel Ingredient sells CERA-Q to the producers of end-user products, providing them with
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`marketing synopses featuring the name “BF-7” – encouraging them to freely use the BF-7 mark
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`and the BF-7 studies. 16
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`Respondent Sunbio holds the BF-7 trademark registration, but does not regulate the use
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`of the BF-7 mark – except against Petitioner and Petitioner’s affiliates and distributors.17
`
`
`
`
`14 Exhibit J – Copies of TESS and KIPRIS online trademark records, downloaded September 4, 2018.
`15 Avoiding patent infringement, copyright infringement, trademark infringement, KFDA regulations, false
`advertising laws, unfair competition and other laws. See also, Exhibit C, Question 7
`
`16 https://www.swansonvitamins.com/swanson-ultra-neurosilk-brain-factor-7-200-mg-60-caps
`
`17 Exhibit K – Sunbio cease and desist letter to Lailab re BF-7
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 6 of 130
`
`III. LEGAL ARGUMENT
`
`A. Summary Judgment Standard
`
`Rule 56(a) of the Federal Rules of Civil Procedure, adopted as TBMP § 528, allows for
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`summary judgment when there are no genuine issues of material fact in dispute. Summary
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`judgment is inappropriate if a dispute about a material fact is genuine, “that is, if the evidence is
`
`such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248 (1986).
`
`B. Petitioner has a Valid Likelihood of Confusion Claim Based on Prior Use of
`“BF-7” in the United States since 2009
`
`Petitioner joined the EC21 marketing program to promote Petitioner’s BF-7 products in
`
`
`
`the United States from January 2009. Petitioner’s products have been continuously offered for
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`sale in the United States on the EC21 website.18 During discovery in this cancellation
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`proceeding, Petitioner produced documents to substantiate these facts.19 Petitioner has common
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`law rights based on prior use of the “BF-7” mark in commerce from 2009.
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`To briefly address Petitioner’s Intent-to-Use application, for purposes of common law
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`priority in the United States, Petitioner has continuously promoted and sold its existing BF-7
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`branded products certified by the KFDA pursuant to a US FDA Certificate of Safety obtained on
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`August 13, 2008.20 To achieve Petitioner’s broader plans for the U.S. market, launching new
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`clinical studies, and newly developed products designed specifically for the U.S. market,
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`Petitioner hired US FDA consultants21 and attorneys. Petitioner’s commitment to compliance
`
`
`18 https://biogrand.en.ec21.com/Products--3320856.html
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`19 https://www.ec21.com/product-details/Memory-Power--3320860.html; See also Petitioner’s Responses to
`Sunbio’s Interrogatories and Sunbio’s Requests for Production; P 000001 - P 000008
`
`20 Declaration of Dr. Sung Su Kim, ¶ 14, Exh. 7.
`
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 7 of 130
`
`with U.S. regulations, prompted decisions to proceed conservatively. The filing of the 1(b)
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`application should not be construed to be conclusive regarding dates of first use or priority, when
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`there is ample evidence of prior common law rights and verifiable evidence of Petitioner’s
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`activities to continue use in the United States. For example, from 2012-2016 Petitioner spent
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`extensive human and financial resources to secure US FDA approval.22 The cost and effort to
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`secure the future of BF-7 branded products in the US market by seeking full compliance of US
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`FDA regulations evidences Petitioner’s intent and verifiable activities during what Respondent is
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`attempting to mischaracterize as a period of non-use.
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`A trademark must be denied registration if it “[c]onsists of or comprises a mark which so
`
`resembles a mark…previously used in the United States by another and not abandoned, as to be
`
`likely, when used on or in connection with the goods of the applicant, to cause confusion, or to
`
`cause mistake, or to deceive.” See 15 U.S.C. § 1052(d). Likelihood of confusion is determined as
`
`a matter of law and is decided upon the particular facts of the case. In re Shell Oil Co., 992 F.2d
`
`1204, 26 U.S.P.Q.2d 1687, 1688 (Fed. Cir. 1993); In re Mighty Leaf Tea, 601 F.3d 1342, 94
`
`U.S.P.Q.2d 1257, 1261 (Fed. Cir. 2010). Any reasonable doubt should be resolved in favor of the
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`senior user. In re Mighty Leaf Tea, 94 U.S.P.Q.2d at 1259 (“for the newcomer has the
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`opportunity of avoiding confusion, and is charged with the obligation to do so.”) (quoting In re
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`Shell Oil Co., 26 U.S.P.Q.2d at 1691; In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
`
`U.S.P.Q.2d 1025 (Fed. Cir. 1988); Hard Rock Cafe Int'l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d
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`1504, 1514 (T.T.A.B. 2000).
`
`
`21 Declaration of Amanda Vickers outlining the regulatory requirements under U.S. law
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`22 Declaration of Dr. Sung Su Kim, ¶ 15, Exh. 8.
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 8 of 130
`
`In determining likelihood of confusion, the Board may consider thirteen factors set forth
`
`in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
`
`In this case, the relevant DuPont factors are: identical marks, fame of the Petitioner’s mark, the
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`relatedness of the goods as described in the application or registration, the similarity of the trade
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`channels, the conditions under which and buyers to whom sales are made, the nature and extent
`
`of actual confusion, the extent of possible confusion, the applicant's intent in selecting a mark,
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`the variety of goods on which the mark is used, and the number of third party marks in use for
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`similar goods. Here, each of the relevant DuPont factors weighs heavily in favor of finding a
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`likelihood of confusion.
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`Respondent Sunbio was aware of Petitioner, Petitioner’s BF-7 marks, and Petitioner’s
`
`BF-7 Studies, before it allegedly adopted the mark and applied for registration with the USPTO.
`
`Respondent had a duty to avoid choosing a similar mark. See Kenner Parker Toys, 22 USPQ 2d
`
`at 1456. Respondent Sunbio filed its Application intending to benefit from Petitioner’s goodwill
`
`and reputation embodied in Petitioner’s BF-7 marks. Respondent trading off Petitioner’s
`
`goodwill further demonstrates that confusion is likely. DC Comics v. PanAm. Grain Mfg. Co.,
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`77 USPQ 2d 1220, 1228 (TTAB 2005); L’Oreal, 10 USPQ 2d at 1442 (“bad faith is strong
`
`evidence that confusion is likely, as such an inference is drawn from the imitator’s expectation of
`
`confusion”).
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`Petitioner respectfully requests that the Board grant Petitioner’s cross-motion for
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`summary judgment that Respondent’s BF-7 mark is confusingly similar to Petitioner’s BF-7
`
`mark which Petitioner has substantial prior use.
`
`
`
`
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 9 of 130
`
`C. Respondent’s Motion for Partial Summary Judgment Should be Denied
`Regarding Petitioner’s Section 43(a) Claims Because the Board has Authority to
`Consider Petitioner’s Section 43(a) Claims in Conjunction with Petitioner’s
`Other Grounds for Cancellation
`
`The Board has the authority to hear Petitioner’s Section 43(a) claims, particularly in the
`
`
`
`context of Petitioner’s other properly pleaded grounds for cancellation. The Scotch Whiskey
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`Association v. United States Distilled Products Co., 13 USPQ2d 1711, 1715 (TTAB 1989),
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`recon. denied, 17 USPQ2d 1240, 1243 (TTAB 1990) (Board cannot consider claims of unfair
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`competition standing alone, but can consider such claims in determining the registrability of a
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`mark, that is, in determining a separate, properly pleaded ground for opposition or cancellation),
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`dismissed, 18 USPQ2d 1391, 1394 (TTAB 1991) (where petitioner did not plead a separate
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`ground on which to base the petition to cancel, petitioner’s claims under Articles 10 and 10bis of
`
`the Paris Convention could not be considered), rev’d on other grounds, 952 F.2d 1317, 21
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`USPQ2d 1145 (Fed. Cir. 1991).
`
`Petitioner’s Section 43(a) claims are relevant to the Board’s evaluation of whether to
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`cancel Respondent’s trademark registration in light of Respondent’s noncompliance with U.S.
`
`law,23 not only laws prohibiting unfair competition, false advertising, and misuse, but also, FTC
`
`
`23 When the sale or transportation of any product for which registration of a trademark is sought is regulated
`under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with
`such Act for the sole purpose of determining lawfulness of the commerce recited in the application. 37 CFR §2.69.
`
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 10 of 130
`
`regulations,24 FDA regulations,25 U.S. Customs and Border Protection Regulations.26 Use of a
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`mark in commerce must be lawful use to be the basis for federal registration of the mark. Gray
`
`v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15
`
`U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Midwest Tennis & Track Co., 29 USPQ2d 1386,
`
`1386 n.2 (TTAB 1993); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968). Thus, the
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`goods to which the mark is applied, and the mark itself, must comply with all applicable federal
`
`laws. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) (“In order for [an]
`
`application to have a valid basis that could properly result in a registration, the use of the mark
`
`[has] to be lawful, i.e., the sale or shipment of the product under the mark [has] to comply with
`
`all applicable laws and regulations. If this test is not met, the use of the mark fails to create any
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`rights that can be recognized by a Federal registration.”). See also CreAgri, Inc. v. USANA
`
`Health Sciences, Inc., 474 F.3d 626, 81 USPQ2d 1592, 1595 (9th Cir. 2007); United Phosphorus
`
`Ltd. v. Midland Fumigant Inc., 205 F.3d 1219, 53 USPQ2d 1929, 1932 (10th Cir. 2000);
`
`Trademark Manual of Examining Procedure (TMEP) § 907 (Oct. 2017).
`
`
`24 Section 12 of the FTC Act makes it unlawful for any person or corporation "to disseminate, or cause to be
`disseminated, any false advertisement . . . for the purpose of inducing, or which is likely to induce . . . the purchase
`of foods, drugs, devices, or cosmetics.” 15 U.S.C. § 52(a). A "false advertisement" means an advertisement which is
`"misleading in a material respect.” Id. § 55(a)(l). False advertising in violation of Section 12 is a deceptive act or
`practice in violation of Section 5. Id. § 52(b). FTC v. Direct Mktg. Concepts, Inc., 624 F.3d 1, 7-8 (1st Cir. 2010). The
`Lanham Act anticipates coordination between the USPTO and the Federal Trade Commission, permitting
`cancellation of a trademark registration obtained fraudulently or if the registered mark is being used by, or with
`the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with
`which the mark is used. 15 USC 1064.
`
`
`25 Premarket Notification for a New Dietary Ingredient, 21 CFR Part 190; Prior Notice of Imported Food Under the
`Public Health Security and Bioterrorism Preparedness and Response Act of 2002, 21 CFR 1.276-1.285 (May 2009,
`amended May 2013); Dietary Supplement Health and Education Act; Dietary Supplements: New Dietary Ingredient
`Notifications – Sunbio would be required to submit a Prior Notice to the FDA if silk fibroin was properly identified
`on its Bills of Lading (e.g., HS code 350400, HTS code 3504005000).
`
`26 Using an incorrect HS number violates U.S. law, and to do so knowingly is fraud. 19 USC § 1592.
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 11 of 130
`
`Sunbio imports shipments from BrainOn into the United States under various HTS
`
`codes27 for candles, books, etc., then re-labels the shipment invoices as “BF-7” (on non-public
`
`invoices to Novel Ingredient). Novel Ingredient then re-rebrands the shipment again as CERA-Q
`
`and is sold to companies in the United States as functional ingredient ready to be passed off as
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`Petitioner’s genuine BF-7.
`
`BrainOn + Sunbio + Novel each play a well-coordinated role to mislead U.S. consumers.
`
`There can be no plausible deniability in light of all the events documented by law enforcement in
`
`Korea.28 Holding the U.S. trademark registration for BF-7 is the key to this unlawful and
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`deceptive process, and permits Respondent to misuse those trademark rights against Petitioner –
`
`the rightful owner and sole source of genuine BF-7 branded products.29
`
`Even if the Board were to disregard Petitioner’s prior use of BF-7 in the United States
`
`dating back to 2009, the Board is still empowered to permit Petitioner to rely solely on its foreign
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`commercial activity to seek cancellation “…when a defendant…has – as a cornerstone of its
`
`business—intentionally passed off its goods in the United States as the same product
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`commercially available in foreign markets in order to influence purchases by American
`
`consumers.”30
`
`
`27 The proper HTS Code for silk fibroin peptide is 3504005000; Harmonized Tariff Schedule Codes Flags with Prior
`Notice Indicators
`(www.fda.gov/Food/GuidanceRegulation/GuidanceDocumentsRegulatoryInformation/ImportsExports/ucm170031
`.htm 2018-08-24) see also
`(https://www.fda.gov/forindustry/importprogram/entryprocess/entrysubmissionprocess/ucm461236.htm)
`
`28 Declaration of Dr. Sung Su Kim ¶¶ 16 – 21, Exhs. 10, 11, 12, 13, 14, 15
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`29 Exhibit K - cease and desist letter sent from Sunbio’s attorneys to Lailab dated 2017-04-03
`
`30 Belmora LLC v. Bayer Consumer Care AG, 819 F. 3d 697 (2016), cert. denied, 137 S. Ct. 1202 (2017), citing M.
`Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 448 (4th Cir.1986) (“[E]vidence of intentional, direct copying establishes
`a prima facie case of secondary meaning sufficient to shift the burden of persuasion to the defendant on that
`issue.”). Such an intentional deception can go a long way toward establishing likelihood of confusion. See Blinded
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 12 of 130
`
`The Board has authority to review the false advertising, unfair competition, false
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`designation, and misuse in the context of trademark cancellation due to illegality, deceptive
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`importation, violations of FDA regulations, harm to U.S. consumers, and the grievous injustice
`
`that maintaining Respondent’s trademark registration permits – including widespread and
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`unfettered counterfeiting, dilution, and “genericide” of Petitioner’s valuable goodwill in genuine
`
`BF-7 branded products. Accordingly, Respondent Sunbio’s motion for partial summary
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`judgment with respect to Petitioner’s Section 43(a) claims should be denied. In inter partes
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`proceedings before the Board, as in civil cases before the United States district courts, all
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`pleadings are so construed as to do justice.31
`
`D. Petitioner’s §14(3) Claim for Misrepresentation as to the Source of Goods is a
`Basis for Granting Summary Judgment in Favor of Petitioner
`
`Petitioner is the sole source of BF-7 branded silk fibroin peptide in Korea. Respondent’s
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`supplier BrainOn has been charged and/or found guilty of various deliberate attempts to pass off
`
`its goods as those of Petitioner. Prior to filing this cross-motion for summary judgment,
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`Petitioner had already produced one hundred forty-two (142) pages of evidence that clearly
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`establishes those facts.
`
`Respondent produced only eight (8) pages of documents in response to Petitioner’s
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`discovery requests – requests, inter alia, regarding adoption of the mark, research to support
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`health-related claims on its website, marketing efforts, sales records. Respondent Sunbio admits
`
`it never did any research or conducted any studies regarding silk fibroin peptide. See Sunbio’s
`
`
`Veterans, 872 F.2d at 1045 (“Intent to deceive retains potency; when present, it is probative evidence of a
`likelihood of confusion.”).
`
`31 See 37 C.F.R. § 2.116(a); Fed. R. Civ. P. 8(e); The Scotch Whiskey Association v. United States Distilled Products
`Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d
`1873, 1874 (TTAB 2011).
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 13 of 130
`
`Answer to the Cancellation Petition. In response to Petitioner’s Interrogatory No. 4, Respondent
`
`states: “The mark ‘BF-7’ was adopted upon consultation with Registrant’s supplier BrainOn,
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`Inc.” See Exhibit I, Interrogatory No. 4.
`
`Section 14 of the Lanham Act provides that “any person who believes that he is or will be
`
`damaged…by the registration of a mark” may petition the Trademark Trial and Appeal Board “to
`
`cancel a registration of a mark.” 15 USC § 1064; see 15 USC 1067(a). Under Section 14(3), a
`
`person may seek cancellation of a trademark registration “[a]t any time” if, inter alia, “the
`
`registered mark is being used by…the registrant so as to misrepresent the source of the goods…
`
`[on] which the mark is used.” 15 USC § 1064(3).
`
`
`
`Respondent repeatedly invoked the reputation of Petitioner’s BF-7 mark when marketing
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`its product in the United States. Respondent’s use of the BF-7 mark in the U.S. misrepresents
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`the source of Respondent’s products as Petitioner’s products, and it is Petitioner who loses the
`
`ability to control its reputation and thus suffers damage. Even if the Board were to ignore the
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`intentional acts of Respondent outside the territorial borders of the United States, the Board is
`
`empowered to cancel Respondent’s registration of the BF-7 mark pursuant to §14(3) because the
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`mark “is being used by, or with the permission of, the respondent so as to misrepresent the
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`source of the goods or services on or in connection with which the mark is used”. In this case,
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`Respondent blatantly misuses the BF-7 mark, and has permitted the blatant misuse of the BF-7
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`mark by Novel Ingredient and by Novel Ingredient’s distributors that pass off “CERA-Q” as the
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`equivalent to BF-7 or at times BF-7 itself – by referencing the research and clinical studies done
`
`in Korea, and the Korean governmental approvals secured by Petitioner in Korea – where
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`Petitioner is the sole legally authorized source of genuine KFDA approved BF-7 branded silk
`
`
`
`
`

`

`TTAB Cancellation No. 92067124
`BIOGRAND v. SUNBIO
`For the Mark: BF-7
`
`Petitioner's Combined Response and
`Cross-Motion for Summary Judgment
`Page 14 of 130
`
`fibroin peptide. All references to government approvals and statements as to efficacy made by
`
`Respondent Sunbio are references back to Korea32 where Petitioner is the sole source.
`
`To avoid patent infringement, trademark infringement, violations of KFDA regulations,
`
`unfair competition, false advertising, and other Korean laws, KANG Yong Koo has represented
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`to Korean authorities that BrainOn’s “CERA-Q” product is not the same as Petitioner’s “BF-7”
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`product.33 To secure trademark registration in the United States, that same “CERA-Q” product is
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`resold by Respondent Sunbio stating “BF-7” on its invoice to Novel Ingredient.34 Then Novel
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`Ingredient re-rebrands Sunbio’s “BF-7” product as “CERA-Q” again and freely markets CERA-
`
`Q blatantly using BF-7 Studies. This behavior cannot be interpreted as innocent mistake or
`
`coincidence. This behavior can only be interpreted as Respondent Sunbio intentionally trading
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`on the goodwill and reputation of Petitioner. This behavior is precisely the type of behavior for
`
`which §14(3) empowers the Board to cancel Respondent’s registration.
`
`Under §14(3) of the Lanham Act, a person may petition the Trademark Trial and Appeal
`
`Board to cancel a trademark registration “[a]t any time…if the registered mark is being used
`
`by…the registrant so as to misrepresent the source of the goods…[on] which the mark is used.”
`
`15 U.S.C. 1064(3). Cancellation pursuant to §14(3) does not require Petitioner to have prior
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`rights or prove infringement because trademark rights do not include the right to use the mark to
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`deceive customers.35
`
`
`32 In its advertising, Sunbio states that BF-7 has been approved by the Korean FDA. This is true only for Petitioner
`Biogrand’s BF-7. Petitioner has never sold genuine BF-7 to BrainOn, Sunbio, or Novel Ingredient. See Declaration
`of Dr. Sung Su Kim ¶22.
`
`33 See Exhibit C
`
`34 See SB000007 and SB00008
`35 Petitioner can maintain a passing-off claim regardless of wh